ADVOCATES:John F. Bash - Assistant to the Solicitor General, Department of Justice, for the United States as amicus curiae supporting the petitionerNeal Kumar Katyal - for the respondentWilliam M. Jay - for the petitioner

Facts of the case

B&B Hardware (B&B) sells a fastener product in the aerospace industry under the trademark "Sealtight," which it registered in 1993. Hargis Industries (Hargis) sells self-drilling screws under the mark "Sealtite" in the construction industry. After Hargis applied to register its mark in 1996, B&B opposed the application and sued Hargis for infringement. The Trademark Trial and Appeal Board (TTAB) eventually determined that there was a likelihood of confusion between the two marks and denied Hargis' application. On appeal, the district court held that, because the TTAB is not an Article III court, it need not give deference to the TTAB decision and refused to admit the decision into evidence. A jury then found in favor of Hargis. The U.S. Court of Appeals for the Eighth Circuit affirmed and held that, since the Eighth Circuit uses a slightly different likelihood of confusion test from the TTAB, the TTAB did not decide the same likelihood of confusion issues presented to the district court.

Question

Does a finding of a likelihood of confusion by the Trademark Trial and Appeal Board preclude re-litigation in federal court?

John G. Roberts, Jr.:

Samuel A. Alito, Jr.:

This case concerns the doctrine of issue preclusion which applies when two tribunals are asked to decide the same issue.

The decision of the first tribunal usually must be followed by the second.

This prevents the same issue from being litigated more than once, saving everyone time and expense.

This case concerns how issue preclusion applies to Trademark Law.

In particular, the question is whether a registration decision by the Patent and Trademark Offices, Trademark Trial and Appeal Board can have issue preclusive effect in later trademark infringement litigation in Federal Court and if not whether deference to the board's decision is warranted.

The petitioner in this case owns the mark SEALTIGHT, spelled S-E-A-L-T-I-G-H-T, while respondent owns the mark SEALTITE, spelled S-E-A-L-T-I-T-E.

The board concluded that respondent's mark could not be registered because it was so similar to petitioners' that it was likely to cause confusion.

After the board's registration decision, petitioner argued that the District Court should give issue preclusive effect to the board's determination meaning that the parties would not re-litigate the issue of likelihood of confusion.

The District Court refused to apply issue preclusion and United States Court of Appeals for the Eighth Circuit agreed, holding that issue preclusion was not appropriate for numerous reasons.

It also declined to defer to the board's decision.

We reverse the judgment of the Eighth Circuit and remand for further proceedings.

We hold that a court should give preclusive effect to board decisions if the ordinary elements of issue preclusion are met.

Because the board applies the same likelihood of confusion standard as Federal Courts, in some cases issue preclusion will be warranted namely where the usages of the mark adjudicated by the board are materially the same as those before the court, but where the board considers different usages neither issue preclusion or deference is warranted.

This is the same rule of issue preclusion that applies in countless other contexts.

We do not treat Trademark Law differently.

Justice Ginsburg has filed a concurring opinion; Justice Thomas has filed a dissenting opinion joined by Justice Scalia.